How Madrid ten-year trademark renewals work

US trademark practitioners are just now starting to get asked by foreign clients to do a kind of filing that never existed before about September of 2014.  The filing is a ten-year Statement of Use for a US Madrid registration.  This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings.  If you already understand everything about the figure at right, you can skip reading this blog article!

Recall that the United States joined the Madrid Protocol on November 2, 2003.  This meant that non-US applicants were for the first time able to designate the US in Madrid Protocol filings starting on that date.  If you track some of those early US designations, they resulted in granted US registrations no earlier than about September of 2005.  This means that ten-year Statements of Use for US Madrid registrations could for the first time be filed in about September of 2014.  In other words, US trademark practitioners are just now starting to get asked by foreign clients to do a kind of filing that never existed before about September of 2014.  In coming months, many a US trademark practitioner will be asked to do such a filing and will never have actually carried out such a filing before.

Such filings are somewhat similar to ten-year filings for US domestic trademark registrations, but there are some important differences.  In this blog article I will try to explain the similarities and differences, in the hope that this article might be helpful to the trademark practitioner who in the next few months encounters such a filing for the first time.

To make sense of the renewal and maintenance filings for a US Madrid trademark registration, let’s first review what we already know about renewal and maintenance filings for US domestic trademark registrations.  As summarized in the figure, we count six years, or ten, or twenty, from the registration date.  At six years we file the §8 filing, which costs $100 (per class being maintained) and is a Statement of Use which includes one or more specimens of use.  The point of the SOU is, of course, to “clear out the deadwood”.  The idea is that if a mark is not being used any more, its registration should be canceled from the Register.  This frees up the mark (and nearby similar marks) for use by others.  The purpose of the $100 fee is to pay for someone at the USPTO to carry out two simple tasks — looking at the specimen (or specimens) of use to see if it is okay, and looking to see the name of the party filing the SOU to see if that name matches the name of the owner as listed in USPTO records.

This reminds us of a practice tip.  When we are preparing an SOU to be signed by the client, it is important that we check the USPTO records (including assignment records) to see exactly who the USPTO thinks is the owner.  If we were to prepare an SOU in the name of someone other than the party that the USPTO thinks is the owner, we would be begging for trouble.

Returning to the maintenance and renewal process for a US domestic trademark registration, what comes next after the six-year §8 filing is the ten-year §8-and-9 filing.  This costs $500 (per class).  $100 is the SOU fee, the fee to pay the USPTO to review the specimen of use and make sure the names match.  That part is just like the six-year filing.  The other $400 is pure profit to the USPTO.  It is just the USPTO’s way of collecting some rent on the space in the Register where the registration is located.

(The alert reader will already be aware of the new rule that took effect on January 17, 2015 (see my blog article here) that reduces that $400 fee to $300 in the special case where the filing is carried out electronically.)

The registrant then gets to relax for ten years until the twenty-year filing comes due.  This filing, also called a §8-and-9 filing, has the same paperwork requirements as the ten-year §8-and-9 filing.  The process continues at thirty years, forty years, and so on.

Having reviewed what we already know about US domestic trademark registration maintenance and renewal filings, we can now turn to the US Madrid trademark registration maintenance and renewal filings.

Recall from the discussion above that the first granted US registrations from Madrid filings happened in about September of 2005.  The six-year Statements of Use for those registrations started to come due in about September of 2010.  By now most US trademark practitioners have carried out some of these six-year Statements of Use for Madrid registrations, and are aware that the USPTO calls them §71 filings instead of §8 filings.  But the paperwork requirements for a §71 filing are identical to the paperwork requirements for a §8 filing.  You have to hand in a specimen of use (or more than one if you are maintaining more than one class), and you have to pay $100 (per class).  And the USPTO looks to see if the names match and decides whether the specimen is acceptable.

As an aside, I imagine that many practitioners will feel, as I do, that these six-year Statements of Use in Madrid cases (just like the six-year Statements of Use in US domestic cases with a filing basis of §44e) are very often a tedious and unpleasant business.  Very, very often what we encounter is what I call “the balaclava problem”.  For each trademark class in the application, the applicant copies the entirety of the Nice manual into the application.  So for example if class 25 is in the application, the applicant lists every conceivable type of clothing, including my favorites:  ankle garters, ascots, balaclavas, boas, Japanese style socks, and smoking jackets.  (See for example this application listing no fewer than 526 types of clothing including all of my favorites just mentioned.)

The six-year Statement of Use is when the practitioner for the first time faces the unpleasant task of dealing with “the balaclava problem”.  The practitioner has no choice but to force the client to review every one of the hundreds of types of clothing to see which types of clothing are actually in use in commerce in the US in connection with the mark. The practitioner’s experience and intuition prompt the practitioner to be a bit skeptical as to whether the client really is selling Japanese style socks (the ones with the big toe in a sort of separate pocket from the four other toes) as well as ankle garters and balaclavas and smoking jackets.  (Does anyone sell smoking jackets any more?  Turns out the answer is yes!  See here on Amazon for some examples.)

A quick look at the client’s web site typically reveals that the client in fact only sells socks, nothing else, or some other single type of clothing.  At which point the practitioner has no choice but to browbeat the client into canceling 525 of the 526 items from the trademark registration.  (Every now and then the practitioner will encounter a client that refuses to cancel the items that are not in commerce.  When this happens the practitioner has no choice but to withdraw from representation of the client.)

Well, back to the discussion of maintenance and renewal of US Madrid trademark registrations.  As just discussed, most US practitioners are by now familiar with the six-year Statement of Use that needs to be filed, since these started to come due in September of 2010 and several years have passed since then.  For most US practitioners, the only real challenge was learning to say “§71” instead of saying “§8”.  Everything else was identical to domestic practice.

Which brings us to what is new for US trademark practitioners — the ten-year filing for a US Madrid trademark registration.  The first such filings started to come due in about September of 2014 and most US trademark practitioners will not yet have encountered such a filing.

Returning to the figure … we see that if we count ten years from the date that the USPTO granted the registration, we don’t file a §9 renewal on that ten-year anniversary.  We don’t pay $500 per trademark class.  For a US Madrid registration, we only file a Statement of Use.  We only pay $100.  In fact the filing activity that we do at ten years (from the date of the grant of the US registration) is the same as the filing activity that we did at six years.  And when twenty years comes around, it will be that same filing activity.  Just a specimen of use (for each class being maintained), payment of the $100 (for each class being maintained), and a statement by the client that the mark continues to be in use for all of the maintained goods/services.

So in this transition from the US domestic world to the Madrid world, what happened to the $400-per-class payment?  What happened to the §9 renewal?  What happened to the pure profit for the USPTO, the rent that the USPTO charges for the space occupied in the Register?

The answer is that this money changed hands at some earlier time, and you as a US practitioner will not be responsible for paying this money.  Looking at the figure, we see a separate timeline labeled “IR” which relates to the date of the grant by the International Bureau of the International Registration.  That date set in motion a sequence of ten-year anniversaries upon which the trademark owner would pay renewal fees directly to the IB.  Assuming that the trademark owner chose to pay the renewal fee relating to the US designation, then the owner would have paid 380 Swiss Francs to the IB.  The IB would then have forwarded that money (about $399 at today’s exchange rate) to the USPTO.  That’s the equivalent of the §9 filing.  That’s the pure profit to the USPTO, the rent for a space in the Register.

Which leads us to a practice tip.  If you are in the process of preparing a ten-year Statement of Use to be filed in a US Madrid trademark registration, you need to avoid the potential embarrassment of doing all of that work and then finding out that the owner never carried out the ten-year renewal at the IB.  To check this, go into TSDR and click on “documents” and look for a fairly recent document called “IR-Renewal”.  This will indicate that the 380 Swiss Francs got paid.

Now a bit of an advanced topic.  We talked above about the fact that the USPTO joined Madrid on November 2, 2003 and that it was only on that date that a newly filed Madrid Protocol trademark application could designate the US.  The alert reader will appreciate, however, that when we see a US Madrid registration, it might not have been the result of such a filing.  Suppose a trademark owner had obtained an International Registration fifteen years ago.  At the time, the owner would not have been able to designate the US for the simple reason that the US had not at that time joined the Madrid Protocol.  Such a trademark owner would, however, have been able to designate the US in a so-called “Subsequent Designation” or “subdes”, any time on or after November 2, 2003.  And indeed plenty of trademark owners have done just that.  They file a “subdes” which designates the US.  This leads to a US trademark application with a series code of 79, just like what would have happened if the US had been designated in some newly filed Madrid Protocol application.

The point here is that in the simple case in the figure, the ten-year renewal filed at the IB comes a few months before the ten-year SOU comes due in the USPTO.  But that’s the simple case where the US has been designated in some newly filed Madrid Protocol application.  If, on the other hand, the owner has filed a subdes to the US, then there is no reason that the two ten-year tasks will be close in time to each other.  Where a subdes to the US is concerned, the ten-year renewal at the IB might have happened nine years ago.

The other kind of filing that we have not yet discussed is the §15 filing — the “incontestability” filing.  We are all accustomed to filing a §15 filing in a domestic US registration, often filed at the same time (and as part of the same electronic filing package) as the six-year Statement of Use filing.  What about a client that is a Madrid registrant?  Can that client file a §15 filing?  The answer is “yes”, they can.  The same requirements apply — the owner needs to be able to say, truthfully, that they have been using the mark exclusively and continuously for at least five years, and needs to be able to say that there are no pending court or TTAB proceedings that put the registration into question.  The client that has a Madrid registration can do the §15 filing at the same time as the six-year Statement of Use filing (the §71 filing).